WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION PIRELLI & C. S.p.A. v. Oleg Shmatko Case No. D2010-0086 1. The Parties
Complainant is PIRELLI & C. S.p.A. of Milan, Italy, represented by Giambrocono & C. S.p.A., Italy.
Respondent is Oleg Shmatko of Moscow, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2010. On January 19, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 21, 2010, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 29, 2010. In accordance with the Rules, paragraphs 2(f) (iii), 2(g), and 5(a), the due date for Response was February 18, 2010. Due to logistical problems with the courier services, on February 24, 2010, the Center extended the deadline to March 3, 2010. Respondent did not submit any Response. Accordingly, the Center notified Respondent's default on March 4, 2010.
On March 5, 2010, Complainant made a supplemental submission in the proceeding, containing information for the change of the website associated to the Domain Name after Respondent became aware of the Complaint. The Center acknowledged receipt of the supplemental filing the same day.
The Center appointed Assen Alexiev as the sole panelist in this matter on March 8, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel decided to accept and take into account the supplemental filing made by Complainant, as this, although not requested by the Panel, does not appear as causing any prejudice for Respondent, while providing additional relevant information for the dispute. 4. Factual Background
Complainant is the owner of the following International trademarks:
- International Trademark No. 718054 PIRELLI (device), registered on July 26, 1999, designating, among other countries, the Russian Federation;
- International Trademark No. 720495 PIRELLI (word), registered on May 7, 1999, designating, among other countries, the Russian Federation; and
- International Trademark registration No. 781714 ПИРЕЛЛИ (“PIRELLI” in Cyrillic script), registered on November 8, 2001, designating among others, the Russian Federation.
The Domain Name was registered on January 4, 2010. 5. Parties' Contentions A. Complainant
In Complainant's submission, the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. It is composed of the words “pirelli” and “tires”. The former is completely identical to the company name and the main trademarks of Complainant. The latter is the plural of a generic word in American English that means “a ring or band of rubber, either solid or hollow and inflated, or of metal, placed over the rim of a wheel to provide traction, resistance to wear, or other desirable properties”, which is identical to the historical core products of Complainant. Therefore, the Domain Name falsely suggests a possible link between Complainant and the domain name owner.
Complainant contends that Respondent has no rights or legitimate interests in respect of the Domain Name. He has never been commonly known by it; his name (Oleg Shmatko) does not consist in whole or in part in the denomination “pirelli”, and his business is not connected to Pirelli's tyres. Respondent does not hold any trademark or other right consisting in whole or in part in the denomination PIRELLI, which is the only distinctive part of the Domain Name. Respondent is not making a legitimate noncommercial or fair use of the Domain Name; the latter is currently used in connection with a page which shows pornographic pictures and links, and Respondent is exploiting Complainant's reputation to attract Internet users and forward them to pornographic pages.
According to Complainant, the Domain Name was registered and is being used in bad faith. Despite the clear reference to the “tires” of Pirelli, the Domain Name is used in connection with an active website which exclusively contains pornographic material arranged by categories. It also contains banners promoting other adults-only sites. The website is completely written in the English language and no advisory is displayed to prevent that young people have a direct and unfiltered access to the pornographic materials. Respondent has registered the Domain Name to attract, for financial gain, Internet users to his website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Domain Name or of Respondent's website.
Complainant further alleges that Respondent must have been aware of the PIRELLI trademark and the registration of the Domain Name must only have occurred in bad faith. Respondent could have had no good intention except to take advantage of the reputation and goodwill associated with Complainant's mark in increasing traffic to his site, and thereby, eventually increasing revenues from the download and advertising. The mere fact that Respondent has used the Domain Name in connection with a web site containing pornographic material and links to other pornographic websites is likely to cause damage to the reputation and goodwill of Complainant, which is evidence of bad faith use.
Complainant also submits that Respondent was recently involved in a similar dispute resolution proceeding before the ADR Center of the Czech Arbitration Court in relation to the domain name . The case was nearly identical to the present one because the disputed domain name was composed of a famous trademark (MICHELIN) and the main products of the trademark owner (TIRES) and it was used in connection to a “parking page” with automatic advertising links.
In its supplemental submission, Complainant informs the Panel that the Domain Name has recently been associated to a philanthropic website.
Complainant requests the transfer of the Domain Name. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), Complainant must prove each of the following to justify the transfer of the Domain Name:
(i) That the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That Respondent has registered and is using the Domain Name in bad faith.
By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to Respondent, in compliance with Rules, paragraph 2(a), and Respondent was given a fair opportunity to present his case.
In the event of a default, under Rules, paragraph (14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”
As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques,WIPO Case No. D2000-0004: “ Here, the potential evidence of good faith registration and use was in respondent's control. Respondent's failure to present any such evidence or to deny complainant's allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the panel in Viacom International Inc. v. Ir Suryani,WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant.[ …]In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In this administrative proceeding, Respondent has chosen not to submit formal Response on the substance of the dispute. His default entitles the Panel to conclude that Respondent has no arguments or evidence to rebut the assertions of Complainant. The Panel has to take his decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
Complainant has provided evidence and has thus established its rights in the PIRELLI trademarks, registered in various jurisdictions around the world, including for the territory of the Russian Federation.
It is a common practice under the Policy to disregard gTLDs such as the “.info” section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the Domain Name is the “pirellitires” sequence. Its first part – “pirelli” is identical to Complainant's trademarks, and its second part – “tires” describes the historical core product of Complainant, which is among the goods for which Complainant's trademarks are registered. In the Panel's opinion, the combination of the two elements makes the Domain Name confusingly similar to Complainant's PIRELLI trademarks.
On these grounds, the Panel finds that the Domain Name is confusingly similar to trademarks in which Complainant has rights. B. Rights or Legitimate Interests
Complainant claims that Respondent has no rights or legitimate interests in the Domain Name, since he has never been commonly known by the Domain Name, his business is not connected to Complainant and its products, he has no prior trademarks rights, and is using the Domain Name in connection with a pornographic website, thus illegitimately exploiting Complainant's reputation.
Thus, Complainant has established a prima facie case under Policy, paragraph 4(a)(ii).
It is well established that once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the showing by providing evidence to the contrary.
Respondent has chosen not to present to the Panel any allegations or documents in his defense despite the burden under the Rules, paragraph 5(b)(i) and 5(b)(ix) or the consequences that a panel may extract from the fact of a default (Rules, paragraph 14). If Respondent had any justification for registering or using the Domain Name, he could have provided it. In particular, Respondent has failed to contend that any of the circumstances described in Policy, paragraph 4(c) — or any other circumstance — is present in his favor.
The only information available about Respondent is the WhoIs information, provided by the Registrar, and the content of the website, associated to the Domain Name.
The WhoIs information contains no evidence of rights or legitimate interests of Respondent in the Domain Name. Respondent makes no claims for having rights or legitimate interests in respect of the Domain Names, while, as submitted by Complainant and not denied by Respondent, the associated website contains pornographic content and links to other similar websites. At the same time, the very combination “pirellitires” suggests that Respondent is perfectly aware of Complainant and its products, since there is no conceivable meaning of this combination other than “Pirelli tires”.
In the Panel's view, such conduct tarnishes Complainant's trademarks and trade name, and cannot be regarded as a legitimate activity giving rise to rights or legitimate interests of Respondent in respect of the Domain Name within the meaning of the Policy, paragraph 4(a)(ii).
As to the recently changed association of the Domain Name to a philanthropic website, the Panel is of the opinion that this change, in the lack of any explanation by Respondent, does not in itself appear to give rise to any rights or legitimate interests of Respondent in the Domain Name. The Panel finds no plausible reason for the association of this particular Domain Name to such website, regardless of the actual aims and activities of the latter.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
For the purposes of Policy, paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder's documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder's website or location.
In the present case, the Domain Name is confusingly similar to Complainant's PIRELLI trademarks, and Respondent has been found to have no rights or legitimate interests in them, while positively being aware of Complainant and of the goodwill of its PIRELLI trademarks. Respondent appears to have used the Domain Name to associate it to a pornographic website. Such conduct represents an attempt for illegitimate exploitation of the reputation of Complainant and its trademarks with a commercial purpose.
This conclusion is not altered by the recent change in the content of the website associated to the Domain Name. As discussed above, the association to the new website does not per se create any rights or legitimate interests of Respondent in the Domain Name; rather, in the lack of any plausible explanation, it appears as an attempt of Respondent to add a degree of legitimacy to his actions.
Taking into account all above, the Panel is prepared to accept that the Domain Name has been registered and used by Respondent in an attempt for commercial gain to attract Internet users to the Domain Name by creating a false association with Complainant and its trademarks. These actions amount to bad faith registration and use of the Domain Name under the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to Complainant.
Assen Alexiev
Sole Panelist
Dated: March 29, 2010
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